Viavi Solutions Inc. v. Platinum Optics Technology Inc.

Background

Viavi sued PTOT under federal patent law. The case originally included claims involving four patents, but Viavi voluntarily dismissed its claim concerning the ’369 patent. The patents remaining in the case—the ’269, ’526, and ’794 patents—concern optical filters.

The order concerns Viavi’s Third Amended Complaint (TAC). The TAC alleges direct infringement involving wafer samples that PTOT sent to a third-party company. Viavi previously charted the patent claims against a different PTOT filter found in that company’s device. Viavi alleged that the previously accused filter represented the samples PTOT sent because both originated from the same type of wafer, followed the company’s specifications, and had the same filter design and optical properties.

In an earlier round of this case, the court dismissed Viavi’s Second Amended Complaint. The court found that Viavi had not supplied enough factual support to connect the previously accused filter to the accused samples or to explain why the samples met the patent claims. The court had also previously granted PTOT summary judgment on Viavi’s induced-infringement claim.

Rule 12(b)(6) Standard

PTOT moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint alleges enough facts to state a legally recognized claim. At this stage, the court generally accepts well-pleaded factual allegations as true and draws reasonable inferences for the plaintiff, but it does not accept bare legal conclusions as facts.

For patent infringement, the plaintiff does not need to plead every claim element in a rigid, element-by-element format. The complaint must nevertheless include factual allegations explaining why it is plausible that the accused product infringes. Merely repeating the patent’s claim language is not enough.

Direct Infringement

The court held that the TAC supplied the factual basis missing from the earlier complaint. Viavi alleged that the third-party company gave substantially similar requests to Viavi and PTOT, that both suppliers sent samples, and that suppliers would use the company-approved filter stack and performance requirements. Viavi also relied on documentary evidence and declarations from an independent expert and a Viavi program manager.

Accepting those allegations as true, the court found it plausible that the accused samples had the same relevant design and optical properties as the previously accused filter and therefore infringed for the same reasons. The court rejected PTOT’s arguments that Viavi had not analyzed an accused sample, that the TAC relied on evidence previously found insufficient, and that the new evidence did not concern the accused samples. The court stated that those criticisms could be addressed at a later stage.

The court therefore DENIED PTOT’s motion to dismiss Viavi’s direct-infringement claim.

Willful Infringement

The court also held that Viavi plausibly stated a claim for willful infringement. Willful infringement requires allegations that the accused infringer specifically intended to infringe. The TAC alleged that PTOT knew about the asserted patents before the lawsuit and shipped the accused samples despite that knowledge.

PTOT argued that the alleged conduct occurred after litigation had begun, that Viavi had not sought a preliminary injunction, and that PTOT’s earlier pleading showed a good-faith belief that it was not infringing or that the patents were invalid. The court rejected those arguments at the pleading stage. It explained that there is no rigid requirement that a patent holder seek a preliminary injunction to pursue enhanced damages, and it noted that Viavi also alleged continuing infringement. Whether PTOT actually had a good-faith belief and whether continuing infringement occurred were factual issues for a later stage.

The court therefore DENIED PTOT’s motion to dismiss Viavi’s willful-infringement claim.

Disposition

The court concluded that PTOT’s motion to dismiss the TAC is DENIED.